The Leahy-Smith America Invents Act (AIA) has transformed U.S. patent law in many ways. However, its impact on patent litigation strategy remains to be seen, particularly with respect to litigation stays.
Prior to the AIA, parties could address the validity of a patent in the U.S. Patent and Trademark Office (USPTO) by initiating an inter partes (IPX) or ex parte re-examination (EPX). If the subject patent was also at issue in a civil litigation, a party could seek to avoid parallel proceedings by requesting a stay of the litigation pending the outcome of the USPTO proceeding. A three-factor test emerged for granting a stay pending either proceeding. The AIA, however, replaced IPX and introduced three new mechanisms for challenging patent validity. This article examines the impact the AIA will have on litigation stays pending USPTO proceedings.
